Q&A

1. What is a trademark?

A trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.

2. What is a service mark?

A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and
distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to
both trademarks and service marks.

3. What is a patent?

A patent is an property right relating to an invention,

4. What is a copyright?

A copyright protects works of authorship, such as writings, music, and works of art that have been
tangibly expressed.

5. Is the country a member of Paris convention?

Kuwait become a member of Paris Convention and can claim priority based on original filing

6. What membership or affiliation or treaties your country already signed?

7. Does the trademark law provide for Licenses?

There is provision for trademark licenses (or registered users)

8. What are the benefits of trademark registration?

Registering trademark provides several advantages, including:
a. Registering a trademark protects a company’s name or logo, which is often a company’s most
valuable asset;
b. Registering a trademark grants the trademark owner receives exclusive nationwide ownership of
the mark;
c. Registering a trademark decreases the likelihood of another party claiming that your trademark
infringes upon their trademark;
d. Registering a trademark the trademark owner obtains the future right to make the mark which provides
conclusive evidence regarding the validity of the mark and of the registrant’s exclusive right to use the
mark;

9. Which Nice classification of goods adopted by Kuwait

Tenth edition of the Nice Classification to enter into force on January 1, 2017

10. Can a smell or a sound be registered as a trademark?

A trademark is any symbol used to distinguish a product or service of a company. So, a smell or a
sound, which fits this definition, may be a trademark. However, you should bear in mind that the
trademark must be capable of graphic representation, so the smell or sound will have to be able to be
registered as “the smell of …” or “the sound of …”.

11. Can I register an idea or a concept as a trademark?

No, a trademark is any symbol used to distinguish a product or service of a company. An idea or a
concept does not fit this

12. Can I register retail services?

Yes

13. In what common reasons for refusal of a trademark ?

1. Likely to cause confusion with a mark in a registration or prior application;
2. Descriptive for the goods/services;
3. A geographic term;
4. A surname;
5.Resembles of a national flag.
6.Against religious nature

14. How long will it take for my mark to register?

The total time for an application to be processed for smooth registration is almost one year or less it
may take years depending on the basis for filing and the legal issues that may arise in the
examination of the application

15. If an application for a device mark is filed in colour, is there any benefit for filing the same application in black and white?

A mark registered in colour, the protection available only for that particular colour, however if a mark
registered in black and white will protect for all colours.

16. Is use of products or services necessary for filing & maintaining a trademark?

Use is not necessary for the seeking protection of a trademark and no certificate of use is necessary for the renewal of a trademark. However any interested person through court may order to strike off the registration if it is established that the mark had not been effectively used for five consecutive years

17. Are there any goods or services for which the mark cannot be registered?

Beer, ale and porter in class 32, alcoholic goods in class 33 and pork meat in class 29 are not registrable

18. My country is not having Kuwaiti consulate or embassy for legalization of the document what step I should take for legalizing these documents?

If a country doesn’t have the Kuwaiti consulate it is appropriate for you to legalize the document with
British consulate. And the same we can additionally legalize with British consulate in Kuwait.

19. What is the minimum period for the registration of a trademark?

It depends with the process of application inside the Trademark Office; normally it will take 9-12
months for an application to complete the process for registration.

20. What does “refusal on absolute grounds” mean?

Trademarks Office has had legal power to refuse an application on specific grounds: for the purposes of the Law, the “mark” filed are not considered to be able to be a “trademark” for one of the following reasons.

1,Formal reasons 2, lack of distinctiveness or descriptiveness 3, Public policy 4, Immortality 5, Resembles to an official symbol 6, resembles of a national flag 7, resembles to surname 8, resembles to a Geographical name or indication

21. What does “refusal on relative grounds” mean?

Trademark office able to reject a trademark on “relative grounds”: this is where the application is rejected because the trademark already exists and other parties have prior rights to the mark. Rejection on relative grounds may be obtained through the opposition procedure. This right may be granted either to the public, which will reject the application.

22. What is a disclaimer condition? Is it imposed for all application?

It is a condition imposed by the Registrar for multi worded applications, The Registrar will accept the application only if the applicant agrees in writing not to use the trademark separately and use it as a whole in the same form as applied.

23. What is associated mark? Is it necessary to link together with the registration applied for?

Associated marks are identical or similar marks owned by the same person and used for the same or similar classes of goods or products. The marks or their distinctive characters, the registration of which is applied for separately, shall also be deemed as associated marks. Upon examination of the application the Registrar will impose condition to associate such marks. Normally applying additional entries to makes the link.

24. Can I use a trademark, which has been rejected by the Trademarks Office?

In principle, there is nothing to prevent you using it to market your products or services. You can’t take
any legal action against infringement

25. If I am interested can I apply for trademark cancelled by its owner?

You have to wait three years from the struck of date for apply for the registration of a mark cancelled by its owner.

26. What is meant by “3D mark”?

A 3D mark is a synonym for a shape mark. For example, the shape of a bottle registered as a
trademark.

27.What is the difference between a trademark applied for and a registered trademark?

A trademark is only registered if, when the application is filed, it has met certain requirements and if the procedure has been able to be followed properly. Several months elapse between application and registration without affecting the inception of the protection.

28. What is the difference between a firm of trademark Agent and the Trademarks Office Or competent authority?

The Trademark Office is the official body responsible for the registration of trademarks. The Office ensures that the mark accepted will uniformly protected by Law. It is a public body, which administers the Register and regulated by Government.
A trademark agent is a person or a firm specializing in the area of industrial property who or which will advise and guide any person interested in that area. It is compulsory for an International applicant to appoint their agent to act on their behalf for the process of trademark in Kuwait

29. Can I file my application directly?

Local applicant’ s, it is possible to file their application directly, but most of the application is processed through trademark agent/attorney. For international applicants it is necessary to appoint their local agent and a suitable Power of Attorney should be submitted along with the application.

30. If I change my trademark while it is in existence (e.g. by modernizing the lettering), am I still protected or do I have to file another application?

The protection applies to the mark as it was filed. Any change in the distinctive aspect of the mark requires a new application. However in certain cases the slight changes possible through entries for details contact us.

31. Can I fill the application to register my trademark in English?

All documents including trademark application should be filed in local Language, Arabic, the official
languages and your agent will process your application

32. For how long is a filed application valid?

An application filed for a trademark, followed by registration, is valid for a period of 10 years. It can be
renewed indefinitely, for successive periods of 10 years.

33. How much does it cost to file an application (Official)? Is it possible for refund of fees once paid?

The official fees for filing an application is approximately US$ 120 up to registration and it is not possible to refund or endorse the fees once paid

34. What is the total cost (official+ Professional) for the registration of a trademark in your country?

36. On what date does the protection start?

On the day on which the written application is received by the Trademark Office, your form will be stamped with the date and application number is allotted on serial basis with an Official receipt for your application: this date, the filing date, will be considered to be the date from which the applicant will enjoy the right of protection, provided that the application meets the minimum requirement including the payment of fees.

37. Is it possible to request an availability search without filing an application at the same time? What are the advantages and disadvantages of doing so?

Yes. The advantage is that you know in advance, from the results, whether it is sensible to apply to
register the mark.

38. Is it essential to submit search report when filing an application, and can I do it myself?

Search availability is not necessary for filing an application. No, the search can perform only through your local agent since it is not available on the net and no Official search report may issued in this respect

39. Is there any time limit for recording assignment? If so what is the fine for late filing of assignment?

There is no time limit for recording the assignment however Assignment must be recorded before a trademark application/registration is used any proceedings against third party or in order to prevent the mark from being cited by the examiner against new application for a similar mark filed by the assignee.

40. What is the deadline for opposition for Trademark

The opposition deadline has been increased to 60 days (from the current 30 days in Kuwait).
however, the deadline remains non-extendable.

41. Is your trademark office adopt Electronic Application System ?

The filing now electronically however, online fling not yet allowed for public

42. If I have been using my mark for several years without registering it, don't I have any rights against a third party who copies it?

No, use of a mark does not give you any right to protection under Kuwait trademark Law. Only application gives exclusive rights to a trademark. And it is not possible for you to take the appropriate action against a third party who copies it.

43. When I can apply for the renewal of my trademark? From what date the renewal date is calculate? How long your Trademark Office needs to issue my renewal Certificate?

Always a registered trademark is renewable; the first renewal is due in 10th year from the application date and can be renewed within 12 months prior to the expiry date. Maximum of six months grace period is allowed, with a fine. Trademark office will not issue a certificate of renewal instead the new protection period is endorsed on the Certificate itself. For this purpose you should return your original certificate of registration to your agent for endorsement.

44. Does the same law govern patents and trademarks?

No, although both subjects belong to the field of industrial property, they are governed by quite
different legislation.

45. Is trademark Office will take action against abuse of my mark by a third party? If not how can I take necessary action?

The Trademark Office has no jurisdiction as far as abuse or infringements of existing trademarks are concerned: it is up to the owner of the prior mark – which must be registered in this case – to take the appropriate action. It will ultimately be for the judge to decide whether or not there has been an infringement or a violation of the law. For more information and opinion on a particular case, you should contact us directly.

46. Is it possible to claim priority for trademark in Kuwait?

If the applicant of a trade mark wants to enjoy the right of precedence based on an earlier application filed in a member state to an international convention to which a member state of the Council is a party, he shall attach to his application an acknowledgment stating the date, number, and the state in which he filed the application. The applicant shall also file a certificate issued by the entity in which the application is filed and the certificate states the date of filing and a copy of the earlier application with translation into Arabic within six months from the date of filing the earlier application for which the right precedence is alleged; otherwise he shall forfeit his right to claim it.

47. What do the letters R or TM mean after certain trademarks?

These symbols have no legal validity in Kuwait. However, they may indicate that the sign used is a registered trademark and therefore protected If you claim rights to use a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application However, you may only use the symbol “®” can use for registered trademarks, and not while an application is pending..

48. What’s the difference between a trademark (registration) and a domain name (registration)?

Trademarks and domain names are two completely different topics:
– a trademark is a symbol, which is used to distinguish products and services of a company. By registering it at the Trademark Office you get protection, in other words, it gives you the exclusive right to use this mark.
– a domain name is a sort of address, similar to a telephone number, to identify a site on the World Wide Web (Internet). To obtain this address, you have to register with a national organization (KSRC) for more information contact our Office.

49. Does the law provide Opposition proceedings? Who can file an opposition?

Yes. Before registration
-The Owner of a mark previously registered or filed
– The Owner of a non-registered well known (6bs Paris convention) mark
– Any interested party or Authority based on absolute reason

50. Any annual or periodic fees are necessary for maintaining the registration status of a trademark?

No fees other than renewal fees should be paid for the maintaining the registration of a trademark

51. Is it possible for me to apply for the transfer of ownership of trademark before publication?

Change of ownership like assignment, change of name and change of address, merger on trademark is possible only after it is published and not opposed.

52. What all documents need to be accompanied by trademark application:

1. four images of the marks
2. legalized and translated power of attorney
3. proof of business practice
4. a translation of the mark if it is not in the Arabic language, with an explanation of how it should be
5. pronounced.
6. Priority documents legalized and translated

53. Must an amount be indicated in the assignment deed?

Deed of assignment acceptable with or without goodwill however a nominal amount is recommendable and is acceptable to the Trade Mark Office

54. Is it necessary to include the transfer of the related business and/or the goodwill in the assignment deed?

Yes

55.What are the major changes based on Ministerial Decree No. 500 regarding the Implementing Regulations of Law No. 13, 2015, issued on December 27, 2015, has resulted in several updates to trademark registration procedures

The major changes include:
1. Original documents such as power of attorney , priority document can be filed within three months from the filing date;
2. The total time for examination cannot be more than 90 days from the filing date of the application;
3. Applicants must reply to office actions within 60 days from the date the refusal is issued;
4. Final refusals by the Registrar can be appealed through the Appellant Committee within 60 days of notification. Said decision is subject to appeal before the courts within 60 days from issuance;
5. Publication fees must be paid within 30 days from the date of acceptance;
6. The opposition period is now 60 days from the publication date.
7. Replies to oppositions must be made within 60 days from the date the applicant was notified about the opposition;
8. Registration fees must be paid within 30 days from the date of notification of the final acceptance (after publication);
9. It is possible to amend a trademark registration after payment of prescribed fees;
10. Renewal applications can be made within one year before expiry, with a grace period of six months after expiration with extra surcharges;
11. Provisions have been added that will for the first time allow for “trademark mortgages,” which authorize a proprietor to use its trademark as security for a loan;
12. Provisions have been added that will for the first time allow for recordals of trademark license agreements;
13. Collective marks” will be allowed for the first time;
14. Provisions that will allow for the registration of “quality marks” have been introduced
15. Sound marks will be allowed to be registered for the first time; Smell marks will be allowed to be registered for the first time;